Google Drops Two Patents From ITC Microsoft Case

By Susan Decker and Bob Drummond -
Jan 9, 2013

Google Inc. (GOOG) dropped two patents
related to industrywide technical specifications from an
infringement complaint against Microsoft Corp. (MSFT) at the U.S.
International Trade Commission, where Google is seeking to block
U.S. imports of Microsoft’s Xbox gaming system.

In a motion filed yesterday at the Washington-based trade
agency, Google’s Motorola Mobility unit said it planned to
continue its ITC case against Microsoft regarding a third patent
that doesn’t affect industry standards essential to letting
products from different manufacturers work together. Google also
said it would continue to seek damages relating to all the
patents in federal-court lawsuits.

Google’s move comes after it agreed, as part of a
settlement last week with the U.S. Federal Trade Commission, to
limits on its ability to seek orders blocking sales or imports
of competitors’ products based on so-called standard-essential
patents.

“It looks like Google is taking heed of the FTC’s
decision,” patent lawyer Robert Stoll of Drinker Biddle in
Washington, who’s not involved in the dispute, said in an
interview today. “There’s been some concern they hadn’t at the
same time dropped these claims.”

Microsoft is “pleased that Google has finally withdrawn
these claims,” David Howard, deputy general counsel for the
software maker, said in an e-mail.

Niki Fenwick, a spokeswoman for Mountain View, California-
based Google, declined to comment.

Reasonable Terms

The FTC settlement requires Google to offer competitors
“fair and reasonable” terms for licensing the use of patents
included in industrywide standards for smartphones, tablet
computers and other electronic devices. It also requires Google
to offer to resolve disputes through binding arbitration before
seeking to ban sales or imports by alleging infringement of
standard-essential patents.

The two standard-essential patents that Google dropped from
its ITC case involve technology for video decoding. The patent
that remains in dispute at the agency is for a way to establish
communication between Redmond, Washington-based Microsoft’s Xbox
and accessories.